Apps

If you are a typical person today, you’ve likely used at least three different apps before 9 am. You get up in the morning and click on your weather app of choice to figure out what to wear and whether to take your umbrella. Then you grab an UBER® to get to the office and during the ride, you order your coffee so it is ready for you as you breeze through the building on the way to the elevator. No sense in waiting for the coffee, as this is a needless waste of time. With more and more people relying on apps, app design, branding, marketing, and protection are more important than ever.

The number of mobile apps is exploding. In June 2016, Apple® reported approximately 2,000,000 total apps in its app store. By May 2017, that number had increased by approximately 200,000. Mobile apps may be discussed in three categories – mobile web apps that enhance web browsing, apps that offer users a new service not previously available via a smart phone, and traditional brands whose business is widely known (such as WALGREENS®). With all of the competition in the marketplace, companies must consider how to protect their app brand as a trademark, before it launches the new app into the marketplace.

To be “protectable” as a U.S. trademark, an app must have a few key characteristics. First, consider the name of the app. Does it describe a feature or function of the app? If so, the owner may want to reconsider, as the U.S. Patent & Trademark Office typically does not allow registration of descriptive marks. Instead, the owner of the app will need to come up with a name that is either merely suggestive of the service the app provides or is arbitrary. Arbitrary names of apps are those that do not describe or suggest anything about the app. APPLE® itself is a good example of an arbitrary trademark, as APPLE® is a trademark for computers, pads, phones and other goods and services, all having nothing to do with fruit. Suggestive trademarks may be the happy medium where the function of the app is not outwardly described, but the app name hints at the meaning. For example, ENLIGHT® is a photo editor app and would be considered suggestive because it suggests something about photo editing but does not describe it.

In considering the name of the app, owners will also want to pay attention to the color and icon they will use with the app. Will these elements convey a unique design that may lend itself to trademark protection? While color is sometimes not claimed as part of a design trademark in the trademark application or emphasized in a typical enforcement setting, in the app setting it is important to claim color, as it is one mechanism to set the app apart from others.

Registration of an app name and design provides many benefits. The most important benefit is having the presumption that the owner has the right to use the name, design, and color of the app nationwide over all others, subject to certain exceptions. Another important benefit is that when the app name or design (or both) is a registered trademark, all others are put on notice of the owner’s rights. That is, all others are held to know about the registered app, even if they did not actually know about it. Finally, federally registered trademarks may obtain relief from an infringer without a lawsuit. If the owner simply wants the infringer to stop using the confusingly similar name, design and/or color scheme, the owner need only submit proof to the marketplace on which the app is available, and the marketplace, such as the Apple® App Store, will assist in removing the infringing app.